Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/10/2017

TRADEMARK EAGLE LIMITED

Unit 4, Valley Court Offices, Lower Road

Croydon, Hertfordshire SG8 0HF

REINO UNIDO

Application No:	016592818
Your reference:	TEU8453TME
Trade mark:	ROMAN
Mark type:	Figurative mark
Applicant:	MOJTABA SHEKOFTEH PO BOX 241567 DUBAI EMIRATOS ÁRABES UNIDOS

The Office raised an objection on 28/06/2017 pursuant to Article 7(1)(b), (c) and (j) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive, devoid of any distinctive character and it evokes protected designations of origin and protected geographical indications, for the reasons set out in the attached letter.

The applicant submitted its observations on 13/07/2017, which may be summarised as follows.

1. The word element of the mark applied for, , is not descriptive of the goods claim, nor is it misleading as to their origin. The word ‘ROMAN’ means ‘pomegranate’ in Arabic and has no connection with the word ‘ROMAN’ of ‘ROME’. There is no evidence that the word ROMAN would mislead consumers into believing that the goods or services offered come from Rome. The consumers will at best be perceived by the consumers as generalised and vague connotation of something ancient or historic.

2. The graphic elements of the mark have been misjudged. The crown on top of the ‘O’ acts as an accent, would be perceived by consumers as such, and, as result, renders the sign at issue distinctive from the word ‘ROMAN’.

3. Moreover, the Office did not provide reasoning nor did it demonstrate that the sign at issue has a sufficiently direct and specific relationship with any of the contested goods and services

4. The same mark has been accepted for registration for the same goods and services in UK.

5. The Applicant understands that, inter alia, figurative trademarks indicating geographical origin, as well as variations of these, where the geographical place has a reputation for the goods or services applied for, should be objected to. However, if the Office interpretation was correct, no registration incorporating a country or a geographical reference would be allowed, whether alone or as an element of any trademark.

6. The Office had in the past registered many marks incorporating the words ROME or ROMAN or any other European city.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

Furthermore, ‘the signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

As regards trade marks composed of words, such as the sign here at issue, descriptiveness must be determined not only in relation to each word taken separately, but also in relation to the whole which they form (e.g. 12/02/2004, C-265/00, ‘Biomild’, EU:C:2004:87).

As a general rule, the mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, the word creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the complete word is more than the sum of its parts (‘Biomild’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the goods or services - such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that those signs and indications could be used for such purposes (e.g. 19/05/2010, T-108/09, ‘Memory’, EU:T:2010:213, § 35).

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (e.g. 16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (see, to that effect, judgment ‘Biomild’).

According to Article 7(1)(j) EUTMR, ‘trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications’ shall not be registered.

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

As regards the applicant's observations, the Office replies as follows:

In its submissions the applicant argues that the word element of the mark applied for, , is not descriptive of the goods claimed, nor is it misleading as to their origin. The word ‘ROMAN’ means ‘pomegranate’ in Arabic and has no connection with the word ‘ROMAN’ of ‘ROME’. There is no evidence that the word ROMAN would mislead consumers into believing that the goods or services offered come from Rome. The consumers will at best be perceived by the consumers as generalised and vague connotation of something ancient or historic.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

As regards the applicant’s arguments regarding the other meanings and connotation of the word ‘ROMAN’, the Office advises that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

As regards the applicant’s arguments that the graphic elements of the mark have been misjudged, namely that the crown on top of the ‘O’ acts as an accent, would be perceived by consumers as such, and, as result, renders the sign at issue distinctive from the word ‘ROMAN’, the Office has noted the applicant’s comments.

However, the Office has to reiterate that according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). This, as stated in the Office’s arguments above, is clearly applicable to the present case.

Moreover, it must also be advised that ‘It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 102).

It follows that given that the mark has a clear descriptive meaning in relation to the contested goods and services, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

As set out in the Office’s initial notification of 28/06/2017, although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, namely a slightly stylised and capitalised lettering and a miniature depiction of a common place crown over the letter ‘O’, all in the colour red, the Office considers these elements insufficient as, while reinforcing the message of the word element (‘ROMAN’ as a connotation of courageous and/or honourable), they do not depart sufficiently from a commonplace depiction or representation of a crown and are overall so negligible that they do not endow the trade mark applied for as a whole with any distinctive character. As such, those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the objected goods and services covered by the trade mark application (20/11/2015, T-202/15, WORLD OF BINGO, EU:T:2015:914, § 22).

It follows that the applicant has failed to convince the Office that the sign applied for is in fact capable of duly functioning as an indication of origin despite its inherent lack of distinctive character.

Further in its submissions, the applicant argues that the Office did not provide reasoning nor did it demonstrate that the sign at issue has a sufficiently direct and specific relationship with any of the contested goods and services.

The Office has noted the applicant’s submissions. As regards the applicant argument that the Office did not make a full assessment for all the claimed goods and services by giving specific reasons for each of the terms, it is true that the examination of absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, that the Office must, in principle, state reasons in respect of each of those goods or services, although a general reasoning may be used where the same ground of refusal is given for a category or group of goods or services (see, to that respect, 15.02.2007, C- 239/05, The Kitchen Company, EU:C:2007:99, § 34 and 37) which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group (see order of 18.03.2010, C- 282/09 P, P@YWEB CARD and PAYWEB CARD, EU:C:2010:153, § 40).

In the case at hand, the goods claimed are meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, and relating prepared meals, food products and snacks in Class 29 as well as beers, waters, juices, wines and other beverages in Class 33, for which the expression at issue conveys the message that they are produced/manufactured in Rome or by its inhabitants. As regards the services applied for, they are different advertising, marketing, sales promotions, online ordering services, wholesale, and online and in store retail services in connection with the aforesaid goods in Class 29 and 35, as well as various food and drink provision, restaurant, café, bar and catering services, food and beverages preparation and serving, various accommodation, reservation and rental services applied for in Class 43, the sign at hand informs the relevant consumer that these are either rendered in Rome or are related to the city of Rome, for example as far as the style is concerned (e.g. restaurant, café, bar in a Roman style). As such, it is considered that these constitute sufficiently homogeneous groups that can allow for a general reasoning. The argument of the applicant must therefore be set aside.

In addition, the Office asserts that it is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

As stated in the notification 28/06/2017, the expression ‘ROMAN’ immediately informs consumers without further reflection that the contested goods and services are either produced/ manufactured in Rome or by its inhabitants, or rendered in Rome or in other way directly related to the city of Rome. As such, the mark at issue, notwithstanding certain figurative and stylised elements, conveys obvious and direct information regarding the character of the goods and services in question. The sign at hand consists exclusively of a meaningful expression that will be easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of the goods and services in question.

Therefore, the Office asserts its opinion that when taken as a whole, the sign at hand consists exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but primarily as descriptive in nature, conveying obvious and direct information regarding the geographical origin of the goods and services in question, thus eclipsing any impression that the mark could indicate a trade origin.

As regards the applicant’s argument that the same mark has been accepted for registration for the same goods and services in UK, the Office has noted the applicant’s comments.

However, the Office asserts that as regards the national decision referred to by the applicant, the following case-law relating to registrations under other than Union’s judicatures applies equally:

‘The European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 47).

Further in its submissions, the applicant claims that it understands that, inter alia, figurative trademarks indicating geographical origin, as well as variations of these, where the geographical place has a reputation for the goods or services applied for, should be objected to. However, it argues that if the Office interpretation was correct, no registration incorporating a country or a geographical reference would be allowed, whether alone or as an element of any trademark.

The Office has noted the applicant’s comments. The Office asserts that it did not object the sign at issue under the Article 7(1)(j) on the basis of the mere fact of incorporating a geographical reference, be it alone or as one of its elements. According to Article 7(1)(j) EUTMR, ‘trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications’ shall not be registered.’

As a consequence, Article 7(1)(j) EUTMR applies where protected designations of origin (PDOs) or protected geographical indications (PGIs) have been registered under the procedure laid down by these EU regulations. Importantly, PDOs/PGIs registered at EU level can originate from EU Member States, but also from third countries.

According to Article 14(1) of Regulation (EU) No 1151/2012, agricultural products and foodstuffs, ‘Where a designation of origin or a geographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13(1) and which relates to a product of the same type must be refused if the application for registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission’.

As in the Office’s notification 28/06/2017, the sign at hand, , consists of the designation ‘ROMAN’, which is evocative of the protected geographical indications ‘Abbacchio Romano’ and ‘Carciofo Romanesco del Lazio’, and of the protected designations of origin ‘Nocciola Romana’, ‘Ricotta Romana’ and ‘Pecorino Romano’ for agricultural products and foodstuffs protected under Regulation (EU) No 1151/2012 of 21/11/2012.

‘Evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgments of 04/03/1999, C-87/97, Cambozola, EU:C:1999:115, § 25; 26/02/2008, C-132/05, Commission v Germany, EU:C:2008:117, § 44).

According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.

The products covered by a PDO/PGI protected under Regulation (EU) No 1151/2012 mostly refer to foodstuffs and beverages in Classes 29, 30, 31 and 32.

In the present case, the list of goods and services covers, inter alia, meat, meat extracts; preserved, frozen, dried and cooked vegetables; milk products; edible oils and fats; dried fruit, mixtures of nuts and dried fruits, dried tropical fruits, food products made from dried fruits and nuts; prepared snacks for human consumption made from dried fruit; edible, prepared and processed nuts; snack bars; foodstuffs in the form of snacks in Class 29.

Therefore, the above wording includes lamb, lamb extracts, preserved, frozen, dried and cooked artichokes, cheese, edible oils and fats made from hazelnuts, dried hazelnuts, mixtures of nuts and dried fruits containing hazelnuts, food products made from dried hazelnuts; edible, prepared and processed hazelnuts, prepared snacks for human consumption made from dried hazelnuts, snack bars containing hazelnuts; foodstuffs in the form of snacks containing hazelnuts that are not of the origin indicated by the geographical indications or designations of origin featured in the trade mark for which protection is sought. It follows that the trade mark must be refused under Article 7(1)(j) EUTMR. This ground for refusal may be overcome by limiting the abovementioned goods protected by the geographical indications and designations of origin in Class 29 as suggested in the Office initial notification.

However, the grounds for refusal under Article 7(1)(b) and (c) EUTMR cannot be overcome by limiting the goods as suggested above in relation to the ground for refusal under Article 7(1)(j) EUTMR.

Finally, as regards the applicant’s argument that a number of similar registrations incorporating the words ROME or ROMAN or any other European city have been accepted by the EUIPO, the Office has noted the applicant’s comments.

However, the Office findings do not contradict the relevant case law on which the applicant relies. Neither can applicant successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances which led to the acceptance of these marks cannot be subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The marks cited by the applicant apply to different concepts. They have little or nothing in common with the application mark and have been found to be distinctive in their own right. The EUTM No. 007468747 , EUTM No. 011514312 ‘Roman Legion’, EUTM No. 014886642 , EUTM No. 009886631 , EUTM No. 009952144 ‘Spanish Light’, EUTM No. 009965864 ‘SPANISH COFFEE 43’, EUTM No. 002568152 and EUTM No. 005568548 ‘ ,all contain additional or different verbal and/or figurative elements that affect the overall impression created by the sign; therefore, they are not comparable, for the purposes of examination, to the subject mark.

Finally, as regards EUTM No. 009854861 ‘ROMAN’S’, the Office does not consider that it should follow this example, for the reasons stated above. Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The mere fact that, in other cases relating to other marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. It is clear from the case law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality (‘Streamserve’; 02/05/2012, T-435/11, ‘UniversalPHOLED’, EU:T:2012:210). Accordingly, if in previous cases the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.

According to settled case law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T 36/01, Glass pattern, EU:T:2002:245, § 35).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign applied for, , will be perceived by the consumers as pointing to the commercial origin of the contested goods and services. For the reasons mentioned above, the sign at hand does not possess any actual distinctive character for the contested goods and services, pursuant to Article 7(1)(b) and (c) EUTMR and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the contested goods and services of the applicant from those of other undertakings.

Furthermore, the Office further maintains its objection pursuant to Article 7(1)(j) of the EUTMR, as the holder has not requested the limitation indicated in the Office’s initial notification of 28/06/2017.

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and (j) and Article 7(2) EUTMR, the application for European Union trade mark No 16 592 818 is hereby rejected for all the goods and services claimed, as in the Office confirmation of a restriction of the list of goods and services of 07/09/2017.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Robert KLECUN